21 F. 570 -

21 F1d 570

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Case Text

670

FEDERAL REPORTER.

it will attract the armature to itBelf. If any mechanism is attached to the armature, so that the motion of the armature will break the circuit at the burner-tip, a spark will be found there from the flowing current, but the current, if not too powerful, will cease. :rhis will relieve the helix from the charge of electricity and the armature from its attraction, and leave the armature free to move away from the helix, and, by its motion through the mechanism, to close the circuit, when, if the supply of electricity is continued, the operation will be repeated. The motion of the armature may, by appropriate mechanism, be made to open and close the stop-cock, as well as to break and close the circuit. These claims seem to be intended and appropriate to cover this arrangement of the wires and helix in the circuit with the circuit-breaker, and with the armature moving by the force of the current, and some mechanism by which the motion of the armature will break and restore the circuit and move the stop-cock, without regard to the form of the mechanism. The parts necessary to be described are well enough described with the arrangement of the whole; the rest is left to the common knowledge of those skilled in such matters. Loom 00. v. Higgins, 105 U. S. 580. But this arrangement of these parts was not claimed anywhere in the original patent as a part of the invention. The first and second claims contained no allusion to the wires, helix, or armature; the third was for these and several other parts, a.ll combined and arranged together, and applied to a gas-burner for operation, thus showing an intention to claim that particular combination of the whole. Gage v. Herring, 107 U. S. 640; S. C. 2 Sup. Ct. Rep. 819; Olements v. Odorless ApparG.tus 00. 109 U. S. 641; S. C. 3 Sup. Ct. Rep. 525. The original patent stood nearly nine years before these claims were made. The right under which the defendant operates had accrued before they were made. They oannot be upheld now, as this case, and the deoisions made upon this subject, are understood. Miller v. Bras8 00. 104 U. S. 350. Let there be a decree that these claims are invalid, and that the bill be dismissed, with costs.

MILLIGAN 'V. LALANCE

& GROSJEAN MANUF'a Co.

August 29, 1884.

(CirCUit Court, S. D. NetJJ York.

1.

PATENTS FOR INVENTIONS-ASSIGNMENT-REJECTION OF ApPLICATION-AMENDMENT BY SOLICITOR-IssUE OF AMENDED PATENT-VALIDITy-RECOVEUY OB' AGREED PRICE.

M. made an improvement in metsl vessels for culinary purposes, consisting of & shoulder, around the inside of the upper edge to support the lid, and asit to L. to procure a patent; and the application, being rejected for want of novelty, was amended by the solicitor to include an inclosed wire at

:MILLIGAN V. LALANOE& GBOS.JEAN MANOll"a

ao.

IS'll

the extreme edge, and a pMent having such a shoulder strengthened at the edge by the wire was issued to L., who made und sold at a profit vessels having the shoulder without the wire and vessels having_ both the shoulder and wire, and marked and claimed them all as patented. !d. claimed a royalty on all the vessels sold under his contract with L. Held, that if the shoulder without t.he wire "had been new, so that the patent would have covered that as a part of the patented invention, L. could lawfully control the monopoly of the shoulder only; but that when the claim for that alone was rejected, and such rejection acquiesced in, it could not be claimed that the patent covered that alone j that while as to tQ.e public the patent would be void because !d. did IU)t invent the wire, and the act of the solicitor in inserting it was unauthorized, the relations of !d. and L. were gQverned by their contract, and that M. was entitled to recover as claimed. .
!.

SAME-VERDICT-EVIDENCE.

Upon examination of the evidence the verdict in favor of plaintU! is IUStained.

At Law. R. Robertson, for plaintiff. Abram Wakeman, for defendant. WHEELER, J. The plaintiff was in the employ of the defendant, and made what they supposed to be an invention of a new and patentable improvement in sheet-metal vessels for culinary purposes, consisting of a shoulder around the inside of the upper edge to support the lid. He .assigned it to the defendant to procure a patent upon it and practice it. The defendant applied for a patent j the application was rejected for want of novelty; the solicitor amended it to include ab inclosed wire at the extreme edge, and the patent No. 189,250, dated April 3, 1877, was granted for such a vessel, having such shoulder, strengthened at the extreme edge by such a wire. The defendant made and sold large quantities of the vessels, at a arable profit, which had the shoulder without the wire, and some at Bome profit having the shoulder and wire, and marked them all as pateuted, with the day and year of this patent, and claimed to be operating under it, and this claim was respected. Upon the trial the plaintiff claimed that the assignment was made upon an agreement by the defendant to pay him a royalty on the goods manufactured and sold nnder the patent, to be afterwards ascertained; and the defendant claimed that it was assigned pursuant to the terms of his employment, and was not to be paid for except gratuitously; that the patent does not purport to cover the shoulder without the wire, and that it is void as to what it does purport to cover, on account of the change made by the solicitor, and otherwise, so that there was no basis for a royalty. The jury found forthe plaintiff on this issue, and stated the proportion of profits to which they found the plaintiff entitled, under a stipulation of the parties. The defendaut now claims that the verdict should be set aside because not warranted by the evidence, and because, with the finding in his favor, the plaintiff is not entitled to recover. As to the finding, it seems to be sufficient now to say that the evidence rested almost wholly in parol; that there was enough on either

FEDERAL, REPORTER.

side to well warrant a finding that way, if there had been none on the other; that the determination of the question depended upon the credibility for truthfulness and accuracy of the witnesses, all of which was within the peculiar province of the jury, who, so far as appears, considered the question fairly, and decided it according to their best judgment. This was their duty, and, when 80 performed, the court bas no disposition or authority to review their work.. The other is the more important question. If the shoulder without the wire was new, so that the patent wou1q cover that as a part of the patented invention, the defendant might lawfully control the monopoly of the, shoul,der only.. Sha,'P v. Tifft, 18 BIatchf. 132; S. C. 2 FED. REP. 697. But when the claim for that alone was rejected, and the rejection acquiesced in, it could not afterwards be successfully claimed that the patent covered that alone. The patent issued covered vessels having both the shoulder and wire, but as the inventor did not invent the wire, the act of the solicitor inserting it would seem to be unauthorized, and the patent, as to the public, void. Eagleton Manuj'g Go. v. West, etc., Manuf'g Go. III U. S. 490; S. C. 4 Sup. Ct. Rep. 593. The patent was invalid, apparently, but that does not settle the rights of these parties growing out of their contract. Both acted in respect to it good. The real question now is whether the fact of the invalidity is a good answer to this action upon the contract. The relation of the parties in respect to the patent became similar to that of licensor and licensee. The defendant held the legal title to th'e patent, but held it to use and pay for the use. The price was not expressly agreed upon, but the law will imply a reasonable price, and the question is the same as jf there had been an agreed priae. Had the plaintiff retained the title to the patent, and the defendant taken a license for an agreed royalty, and then practiced the invention exactly as has been done, the fact of the invalidity of the patent would have been no defense to a suit for the royalty. White v. Lee, 14 FED. REP. 789; McKay v. Jackma.n, 17 FED. REP. 641. The defendant has had and enjoyed what was contracted for, and it is no answer to say that the same might have been had without the contract. The defendant could not both stand upon the patent and repudiate it, nor upon the plaintiff's title to the invention and repudiate that. The motion for a new trial is overruled, and the stay vacated.

UNDERWOOD V. WABBEN.

678

UNDERWOOD

V.

WARREN and another.&

September 17, 1884.) to claim, In a sutt for an in-

(Oircuit Court, E. D. Mi88ouri.

PATENTS-EsTOPPEL.

A patentee is estopped, as against an fringement, that the patent assigned is invalid.

In Equity. Exceptions to parts of answer. on an improvement This is a suit for the infringement of a on railroad-track drills, invented by the complainant. The bill alleges, in substance, that the patent claimed to have been infringed was issued to the complainant, and Andrew Warren and Perrin G. March, the defendants, while they were doing business together as partners; that their partnership was subsequently dissolved, and that upon its dissolution Warren and March assigned their interests in said patent to complainant for a valuable consideration, and that he then became, and still remains, its sole owner, and that since said assignments were made to complainant the defendants have manufactured and sold infringing machines, and still continue to do so. The answer alleges, in substance, that complainant's patent is invalid. To this the complainant excepts, and raises the point that the defendants are estopped to deny the validitv of said patent. G. M. Stewart, for complainant. Parkinson Parkinson, for d'efendants. TREAT, J. The bill alleges that the Underwood patent was issued to Underwood, Warren, and March, each one-third interest. It also avers sundry transactions between the respective parties, whereby said Warren and March conveyed all their interest therein to plaintiff for full consideration. This court, at its last term, examined at length all of the points substantially involved,2 and held that the respective parties defendant were estopped from disputing the validity of plaintiff's right. The exceptions, without resort to verbal criticism, are directed to the question of estoppel. and, under the allegations of the bill and answer with respect thereto, the ruling of this court, in the light of authorities there cited, must prevail, and the exceptions be sustained.
1 Reported